California Cosmetics, Inc. v. IMC Inc.
Claim Number: FA0804001174491
PARTIES
Complainant is California Cosmetics, Inc. (“Complainant”), represented by Malcolm
Wittenberg, of Dergosits & Noah
LLP, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silkskincare.com>, registered with GoDaddy.com.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2008.
On April 2, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <silkskincare.com> domain name is registered with GoDaddy.com and that the Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 09, 2008, the Complaint was amended to correct cited deficiencies by supplying trademark/servicemark information upon which the Complainant relied; by supplying a table of contents for all evidence attached; and by supplying the required filing fee.
On April 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@silkskincare.com by e-mail.
On May 1, 2008, Respondent filed a request for extension of time under Supplemental Rule 6. The National Arbitration Forum subsequently denied the request because the request had exceeded the twenty (20) day maximum and was not accompanied by the required fee.
A timely Response was received and determined to be complete on May 1, 2008.
On
May 12, 2008, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Carol M Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the federally registered trademark SILKSKIN, filed in 1988, and issued on June 25, 1991 as U.S. Registration No. 1,648,614. The mark was first used in commerce in association with skin care products no later than February 1986. Complainant also owns federal registrations for the related marks SILKSKIN ULTRA, which was filed in 1997 and issued on December 14, 1999 as U.S. Registration No, 2,300,593; and SILKSKIN FOR MEN, which was filed in 1988 and issued on June 25, 1991 as U.S. Registration No. 1,648,615.
Complainant is the owner of the domain name <silkskin.com> and sells skin care products through its website at that address.
Respondent has registered the domain name <silkskincare.com> which mirrors Complainant’s SILKSKIN trademark.
With regards to Respondent’s registration of the domain name <silkskincare.com> Complainant alleges as follows: the addition of “care” to the domain name does not meaningfully distinguish Respondent’s domain name, particularly in view of the fact that Complainant sells skin care products and is also clear evidence that the only use that could be made of the disputed domain is the confusion of Internet users; Complainant can find no evidence that Respondent is using the domain name for a legitimate purpose, or for any non-commercial or other fair use; and that the disputed domain name has been registered and used in bad faith.
B. Respondent
Respondent states that they have
owned the domain for years and there are hundreds of distributors throughout
the
The domain goes to our home page <tidalwavebiz.com> which includes our product link as our silk skin care and personal care products. When our distributors use the user name after the .com, it forwards directly to their personal page for the silk skin care and personal care products on our website.
FINDINGS
1. The domain name <silkskincare.com> registered by Respondent is identical or confusingly similar to the trademarks SILKSKIN, SILKSKIN FOR MEN and SILKSKIN ULTRA, in which Complainant has rights.
2. Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has
registered the SILKSKIN (Reg. No. 1,648,614) issued June 25, 1991, SILKSKIN
ULTRA (Reg. No. 2,300,593) issued Dec. 14, 1999) and SILKSKIN FOR MEN (Reg. No.
1,648,615) issued June 25, 1991) marks with the United States Patent & Trademark
Office (“USPTO”). The Panel finds that
such registration sufficiently satisfies the ownership requirement of Policy ¶
4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17,
2006) (“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”); see also
Complainant argues
that the disputed domain name is comprised of the SILKSKIN mark in its entirety
with the addition of the generic term “care” which directly relates to the type
of products the Complainant associates with the SILKSKIN mark. The Panel finds that the addition of the
descriptive and generic word “care” fails to sufficiently distinguish the
disputed domain name from Complainant’s mark. It is a suffix of no weight, nor
note. Therefore the Panel rules that the
disputed domain name is confusingly similar to the SILKSKIN mark under Policy ¶
4(a)(i). See Miller Brewing
Once Complainant makes a prima facie case in support of its allegations, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com D-2000-1228 (WIPO Nov. 28, 2000 (finding that , under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel finds no evidence that Respondent is commonly known by the domain name <silkskincare.com>. The WHOIS page submitted into the record indicates the disputed domain name is registered to “IMC, Inc.” and its web pages are bannered with the monikers of Youngevity and TidalWave. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleged that Respondent is using the disputed domain name to resolve to a website featuring products that directly compete with those offered under the SILKSKIN mark and compete with those offered through Complainant’s <silkskin.com> website. Respondent’s website, as evidenced by its own Exhibits, featured products as Youngevity Mineral Makeup collection and Younique Skincare products. These products are in direct competition with Complainant’s skin care cosmetics; namely, skin cleansing lotion, toner, moisturizer, body lotion, bath gel soap, skin masks bronzer and shaving cream. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant re-iterates its contention that Respondent has registered and used the disputed domain name for the purpose of resolving to a website which features products which directly compete with those offered under the SILKSKIN mark. Such sycophantic use, must in course of fact, disrupt Complainant’s business. Thus, Respondent’s registration and use of the <silkskincare.com> domain name constitutes use in bad faith, pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the Complainant’s business under Policy ¶ 4(b)(iii); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel also finds that Respondent is intentionally using the <silkskincare.com> domain name to display competing products and that such use is likely to cause confusion with Complainant’s SILKSKIN mark as to the source, sponsorship, affiliation, or endorsement of the resultant website. The Respondent registered the domain name on September 24, 2004, some thirteen years after the trademark SILKSKIN was issued to the Complainant in 1991, which registration was easily obtainable through a search of the USPTO. Respondent’s own Response and Exhibits offer convincing evidence that Respondent is using the disputed domain name to resolve to a website featuring products that directly compete with those offered under the SILKSKIN mark. The Response states, “This domain goes to our home page www.tidalwavebiz.com which includes our product link which includes our silk skin care and personal care products.” Therefore, the Panel finds Respondent’s registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
This Panel does not concur with Respondent’s argument of laches, as said defense is not a valid defense under the UDRP. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defense of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value).
DECISION
Having established all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <silkskincare.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: May 26, 2008
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